Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-7 and 9-11, 13, 15-20 are pending. Claims 1-6 and 17-20 are withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7, 9-11, 13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 8193430 by Ju et al. (Ju) in view of U.S. Patent Publication No. 2020/0272047 by Chatterjee et al. (Chatterjee).
In regard to claim 7, Ju teaches a method of purifying nanotubes (abstract; C1/L56 to C2/L18; C25/L27-39). Ju teaches separating of single wall carbon nanotubes based on their lengths through size-exclusion chromatography techniques (abstract; C1/L56 to C2/L18; C25/L27-39). Ju teaches obtaining a desired diameter separation or length of carbon nanotubes (abstract; C1/L56 to C2/L18; C25/L27-39). Ju teaches pure carbon nanotubes are separated from carbon nanotubes comprising impurities (abstract; C1/L56 to C2/L18; C25/L27-39). Ju teahces inputting a mobile phase comprising the carbon nanotubes into a column chromatography device (abstract; C1/L56 to C2/L18; C25/L27-39).
Ju does not teach purifying BNNT; Ju does not teach pure BNNT is separated from synthesized BNNT.
Chatterjee teaches BNNTs and CNTs have the same structure with BNNT being BN coated CNTS ([0039]). Chatterjee teaches BNNT and CNT have the same or similar lattice structure and are hexagonal ([0044]).
It would be obvious to one of ordinary skill in the art to use the method of Ju to separate BNNTs in place of CNTs as BNNTs and CNTs have the same structure and similar lattice shape, as taught by Chatterjee. One of ordinary skill in the art would recognize that BNNTs and CNTs are substitutable alternative compositions and the separation method for CNTs, based on size, would work similarly well from BNNTs since they have the same shape, similar lattice structure, and are both hexagonal.
Ju teaches the synthesized nanotubes is a mixture of nanotubes and impurities (C6/L41-59; C26/L1-15). Ju teaches carbon nanotubes have various lengths (C1/L15-31). Ju teaches separations of nanotubes based on length (C1/L46-67; C25/L23-26). Ju teaches size exclusion chromatography (C1/L46-67; C25/L23-26).
Ju does not explicitly teach the nanotubes with the longer length pass through the column faster and the nanotubes with the shorter length pass through the column slower.
As the stationary phase, mobile phase, and efficiency of operation are variables that can be modified, among others, by adjusting said separation order based on size, the precise size order of elution would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed size order of elution cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the stationary phase, mobile phase, and other parameters in the method of Ju in order to obtain the desired separation efficiency, purification, and order of elution (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Ju teaches the column chromatography device is an apparatus wherein a porous stationary phase is filled in a column (C48/L65 to C49/L3). Ju teaches the porous stationary phase is any of a polymer gel bead, a polymer, and an inorganic porous material having pores with a size of 1-80 kDa (C29/L12-30; C48/L65-67).
Ju teaches it is determined based on the presence of a UV absorption region in a UV chromatogram of the material discharged through the lower portion of the column whether the material is a nanotube (C42/L7-25). Ju teaches amorphous particles cause background (C48/L18-26). Ju teaches reducing the background (C48/L18-26). Ju does not teach removing the amorphous particles of 5nm or smaller adhering to a wall of the BNNT are removed by electron beam.
Chatterjee teaches using an electron beam focused on the surface in order to modify the surface properties ([0024]-[0025]). Chatterjee teaches using an electron beam to ablate the material on the surface to achieve desired surface properties ([0024]-[0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize an electron beam to modify the surface, as taught by Chatterjee, by removing undesirable amorphous particles in the method of Ju in order to create desired surface properties and reduce background.
In regard to claim 9, Ju teaches the mobile phase is an aqueous solution in which nanotubes and a surfactant are mixed (C26/L56 to C27/L16; C27/L47-60).
In regard to claim 10, Ju teaches the surfactant is a bile salt-based surfactant (C26/L56 to C27/L16; C27/L47-60).
In regard to claim 11, Ju teaches the bile salt-based surfactant is sodium cholate (SC) or sodium deoxycholate (DOC) (C26/L56 to C27/L16; C27/L47-60).
In regard to claim 13, Ju teaches an eluent is injected into a column for transportation of the synthesized BNNT after the mobile phase has been inputted (C30/L3-28). Ju teaches the eluent is an aqueous solution wherein a bile salt-based surfactant is mixed (C26/L56 to C27/L16; C27/L47-60).
Ju does not explicitly teach the nanotubes with the longer length pass through the column faster and the nanotubes with the shorter length pass through the column slower.
As the stationary phase, mobile phase, and efficiency of operation are variables that can be modified, among others, by adjusting said separation order based on size, the precise size order of elution would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed size order of elution cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the stationary phase, mobile phase, and other parameters in the method of Ju in order to obtain the desired separation efficiency, purification, and order of elution (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 15, Ju teaches the material is a nanotube if a UV absorption region is present in the UV chromatogram (C42/L7-25).
In regard to claim 16, Ju teaches the mobile phase is prepared by a process of preparing an aqueous solution wherein a bile salt-based surfactant is mixed (C26/L56 to C27/L16; C27/L47-60). Ju teaches a process of mixing nanotubes in the aqueous solution (C26/L56 to C27/L16; C27/L47-60). Ju teaches a process of uniformly dispersing the nanotubes in the aqueous solution by irradiating ultrasound to the aqueous solution (C24/L59 to C25/L16). Ju teaches a process of extracting a supernatant of the aqueous solution (C26/L16-37).
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
The 112b rejection was removed in light of the claim amendments.
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KARA M PEO/Primary Examiner, Art Unit 1777
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